Ex parte ALEXANDRE

Board of Patent Appeals and Interferences

Oct 18, 2001

08892348 (B.P.A.I. Oct. 18, 2001)

Claims 23, 25, 26 and 28 to 32 were amended subsequent1
to the final rejection.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte IAN B. ALEXANDRE
____________
Appeal No. 2001-0528
Application No. 08/892,348
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 21 to 32, which are all of the claims
pending in this application.1
We AFFIRM-IN-PART.
Appeal No. 2001-0528 Page 2
Application No. 08/892,348
BACKGROUND
The appellant's invention relates to a modularized
structure framing system and module erection tools
(specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Wilson 1,448,244 Mar. 13,
1923
Kofahl et al. 2,803,856 Aug. 27,
1957
(Kofahl)
Pennecot 3,921,355 Nov. 25,
1975
Coulthard 4,118,903 Oct.
10, 1978
Schonert 4,281,491 Aug. 4,
1981
The rejections set forth in the examiner's answer (Paper
No. 15, mailed October 24, 2000) are as follows:
(1) Claims 21 to 24 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Pennecot.
(2) Claims 21 to 23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Schonert in view of Kofahl.
Appeal No. 2001-0528 Page 3
Application No. 08/892,348
(3) Claims 26 to 32 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Schonert in view of Kofahl and Wilson.
(4) Claims 24 and 25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Schonert in view of Kofahl and
Coulthard.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer for the examiner's
complete reasoning in support of the rejections, and to the
brief (Paper No. 14, filed August 9, 2000) and reply brief
(Paper No. 16, filed December 26, 2000) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 2001-0528 Page 4
Application No. 08/892,348
Rejection (1)
We sustain the rejection of claims 21 to 24 under 35
U.S.C. § 102(b) as being anticipated by Pennecot.
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
We agree with the examiner's rationale (answer, pp. 5 and
10-11), which we incorporate as our own, that claims 21 to 24
Appeal No. 2001-0528 Page 5
Application No. 08/892,348
It is well settled that attorney's argument in a brief2
cannot take the place of evidence. In re Pearson, 494 F.2d
1399, 1405, 181 USPQ 641, 646 (CCPA 1974).
are anticipated by Pennecot. The appellant's argument (brief,
p. 5) that Pennecot uses a ladder frame construction and
permanently installs the square collars 36 in the assembled
building, while true, is not persuasive since claims 21 to 24
do not distinguish over those teachings. Additionally, while
the appellant further argues (brief, p. 5) that Pennecot's
square collars 36 are not "alignment tools," we point out that
no evidence on this point has been submitted by the
appellant. In any event, it is our view that Pennecot's2
square collars 36, as shown in Figures 16 to 19, clearly
function to align various modules and therefore are "alignment
tools."
For the reasons set forth above, the decision of the
examiner to reject claims 21 to 24 under 35 U.S.C. § 102(b) is
affirmed.
Rejection (2)
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Application No. 08/892,348
We sustain the rejection of claims 21 and 22 under 35
U.S.C. § 103 as being unpatentable over Schonert in view of
Kofahl, but not the rejection of claim 23.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). A case of obviousness is established when
the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art. See In re Bell, 991 F.2d 781, 783, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993). In considering the question of
the obviousness of the claimed invention in view of the prior
art relied upon, we are guided by the basic principle that the
question under
35 U.S.C. § 103 is not merely what the references expressly
teach but what they would have suggested to one of ordinary
skill in the art at the time the invention was made. See
Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d
804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493
U.S. 975 (1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ
Appeal No. 2001-0528 Page 7
Application No. 08/892,348
871, 881 (CCPA 1981). That is, the question of obviousness
cannot be approached on the basis that an artisan having
ordinary skill would have known only what they read in the
references, because such artisan is presumed to know something
about the art apart from what the references disclose. See In
re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962).
It is not necessary that suggestion or motivation be found
within the four corners of the references themselves; a
conclusion of obviousness may be made from common knowledge
and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular
reference. See In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969). Further, in an obviousness assessment,
skill is presumed on the part of the artisan, rather than the
lack thereof. In re Sovish, 769 F.2d 738, 226 USPQ 771 (Fed.
Cir. 1985). We are bound to consider the disclosure of each
reference for what it fairly teaches one of ordinary skill in
the art, including not only the specific teachings, but also
the inferences which one of ordinary skill in the art would
reasonably have been expected to draw therefrom. See In re
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Application No. 08/892,348
Boe, 355 F.2d 961, 148 USPQ 507 (CCPA 1966); and In re Preda,
401 F.2d 825, 159 USPQ 342 (CCPA 1968).
With this as background, we find ourselves in agreement
with the examiner's rationale (answer, pp. 5-6 and 11-17),
which we incorporate as our own, that claims 21 and 22 are
unpatentable over the teachings of Schonert and Kofahl. In
our view, the combined teachings of Schonert and Kofahl would
have made it obvious at the time the invention was made to a
person of ordinary skill in the art to have included in
Schonert's modular wall framing system a quad wall module, a
door module and a window module.
With respect to claim 23, we agree with the appellant's
argument that a person of ordinary skill in the art would not
consider Schonert's plate straps 44 (see Figures 4 and 6) to
be "alignment tools" since they do not clearly function to
align various modules. In our view, as shown in Figures 4 and
6 of Schonert, the aligning of the modules is done by abutting
the modules together and then securing the abutted modules
together with the plate straps 44. Accordingly, the subject
Appeal No. 2001-0528 Page 9
Application No. 08/892,348
matter of claim 23 is not suggested by the combined teachings
of Schonert and Kofahl.
For the reasons set forth above, the decision of the
examiner to reject claims 21 and 22 under 35 U.S.C. § 103 is
affirmed and the decision of the examiner to reject claim 23
under 35 U.S.C. § 103 is reversed.
Rejection (3)
Claims 26 to 32 which depend from claims 21 and 22 have
not been separately argued by the appellant and in fact have
been grouped by the appellant in the brief (p. 3) with claims
21 and 22 as a first group. Accordingly, we have determined
that these claims will be treated as falling with claims 21
and 22. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987) and 37 CFR §§ 1.192(c)(7) and
1.192(c)(8)(iv). Thus, it follows that the examiner's
rejection of claims 26 to 32 under
35 U.S.C. § 103 as being unpatentable over Schonert in view of
Kofahl and Wilson is sustained.
Appeal No. 2001-0528 Page 10
Application No. 08/892,348
Rejection (4)
We will not sustain the rejection of claims 24 and 25
under 35 U.S.C. § 103 as being unpatentable over Schonert in
view of Kofahl and Coulthard.
In our view, the only suggestion for combining the
teachings of Coulthard with the teachings of Schonert and
Kofahl in the manner proposed by the examiner (answer, pp. 8-
9) to meet the limitations of claims 24 and 25 stems from
hindsight knowledge derived from the appellant's own
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). It follows that we cannot
sustain the examiner's rejection of claims 24 and 25.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 21 to 24 under 35 U.S.C. § 102(b) is affirmed; the
Appeal No. 2001-0528 Page 11
Application No. 08/892,348
decision of the examiner to reject claims 21, 22 and 26 to 32
under
35 U.S.C. § 103 is affirmed; and the decision of the examiner
to reject claims 23 to 25 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-0528 Page 12
Application No. 08/892,348
LAW OFFICES OF JOHN D. GUGLIOTTA
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SUITE 202
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Application No. 08/892,348
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